35 U.S.C. 112, 6th Paragraph

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35 U.S.C. 112, 6th Paragraph

• Long V. Le
• SPE, AU 1641
• [phone]

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35 USC 112, 6th Paragraph

• Topics
• 35 U.S.C. 112, 6th Paragraph
• The Donaldson Decision
• Scope of application method claims
• The Guidelines Claim limitations invoking 35
  U.S.C 112, 6th Paragraph involve 3-Prong Analysis
• Examination Process Initially, 1) must use
  means for or step for, 2) must include
  function, and 3) must not be modified by
  sufficient structure

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35 USC 112, 6th Paragraph

• Topics (continued)
• Factors to be considered in deciding Equivalence
• Indicia of Equivalence
• Supplemental Guidelines
• 65 FR 38510 (June 21, 2000)
• 1236 OG (July 25, 2000)

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35 USC 112, 6th Paragraph

• An element in a claim for a combination may be
  expressed as a means or step for performing a
  specified function without the recital of
  structure, material, or acts in support thereof,
  and such claim shall be construed to cover the
  corresponding structure, material, or acts
  described in the specification and equivalents
  thereof.

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35 USC 112, 6th Paragraph

• An element in a claim for a combination may be
  expressed as a... means or step for performing a
  specified function

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35 USC 112, 6th Paragraph

• without the recital of structure, material, or
  acts in support thereof,
• and such claim shall be construed to cover the
  corresponding structure, material, or acts
  described in the specification
• and equivalents thereof.

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The Donaldson decision

• In re Donaldson Co., 29 USPQ2d 1845 (Fed. Cir.
  1994)
• means-or-step-plus-function limitation should
  be interpreted by the PTO with regard to the
  structure disclosed in the specification
  corresponding to such language

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The Donaldson decision

• Examiners must interpret a 35 U.S.C. 112 sixth
  paragraph limitation in a claim as limited to the
  corresponding structure material or acts
  described in the specification and equivalents
  thereof

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SCOPE OF APPLICATION

• It also applies to method claims
• An element in a claim for a combination may be
  expressed as a means or step for performing the
  specified function without the recital of
  structure, material, or acts in support thereof

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SCOPE OF APPLICATION

• Paragraph 6 of U.S.C. 112 applied to functional
  method claims where the element at issue sets
  forth a step for reaching a particular result,
  but not the specific technique or procedure used
  to achieve the result.
• The sixth paragraph is implicated with regard to
  steps only when the steps plus function without
  acts are present. Method or process claims may
  therefore be written as a step for performing a
  specified function without the recital of acts in
  support of the function. O.I. Corp. V. Tekmar
  Co., 115 F.3d 1576, 42 USPQ2d 1777, 1781 (Fed.
  Cir. 1997)

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35 U.S.C 112, 6th Paragraph Guidelines

• Claim limitations will invoke 35 U.S.C. 112,
  paragraph 6 if the limitations satisfy the
  3-prong analysis
• Must use the phrase means for or step for
• The means for or step for must be modified by
  functional language
• The means for or step for must not be
  modified by sufficient structure, material, or
  acts for achieving the specified function

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35 U.S.C 112, 6th Paragraph Guidelines

• The first Prong
• Must use the phrase means for or step for
• The words means and for need not be
  immediately adjacent each other, e.g. meansfor

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35 U.S.C 112, 6th Paragraph Guidelines

• Initially, a claim element not using means for
  or step for will not be considered to invoke 35
  U.S.C. 112, 6th Paragraph
• If applicant wishes to have the claim limitation
  treated under paragraph 6, applicant must either
• amend the claim to include the phrase means for
  or step for or
• show that the claim limitation is written as a
  function to be performed and does not provide
  sufficient structure, material, or acts

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35 U.S.C 112, 6th Paragraph Guidelines

• The term means gives rise to a presumption
  that the inventor used the term advisedly to
  involve the statutory mandates for
  means-plus-function clauses. York Products,
  Inc. v. Central Tractor Farm Family Center, 99
  F.3d 1568, 1574, 40 USPQ2d 1619, 1623 (Fed. Cir.
  1996)
• The presumption is not conclusive. As the Court
  states
• Merely because a named element of a patent claim
  is followed by the word means, however, does
  not automatically make that element a
  means-plus-function element under 35 U.S.C.
  112, Paragraph 6. Cole v. Kimberly-Clark Corp.,
  102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (fed.
  Cir. 1996)

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35 U.S.C 112, 6th Paragraph Guidelines

• The Second Prong
• The means for or step for must be modified by
  functional language
• Claiming a step or series of steps by themselves
  does not implicate 35 U.S.C. 112, paragraph 6.
  Merely claiming a step without recital of a
  function is not analogous to a means-plus-function
  . O.I. Corp. V. Tekmar Co., 115 F.3d 1576, 42
  USPQ2d 1777, 1782 (Fed. Cir. 1997)

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35 U.S.C 112, 6th Paragraph Guidelines

• The Third Prong
• The means for or step for must not be
  modified by sufficient structure, material, or
  acts for achieving the specified function
• Where a claim element recites a function, but
  then goes on to elaborate sufficient structure,
  material, or acts to perform entirely the recited
  function, the claim is not in means-plus-function
  format (Cole v. Kimberly-Clark Corp., 102 F.3d
  524, 531, 41 USPQ2d 101, 1006 (Fed. Cir. 1996),
  Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533,
  1536, 19 USPQ 1367, 1369 (Fed. Cir. 1991)

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35 U.S.C 112, 6th ParagraphExamination Process
LLe
LLe
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• The examination process under 35 U.S.C. 112, 6th
  paragraph begin by applying the 3-prong analysis
• If the phrase means for or step for is
  absent, paragraph 6 is not invoked
• If the phrase means for or step for is used
  but either the second or third prong of the test
  is not satisfied, paragraph 6 is not invoked

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35 U.S.C 112, 6th ParagraphExamination Process

• If the phrase means for or step for is absent
  from the claim limitation, the examiner will
  treat the claim as NOT invoking 35 U.S.C. 112,
  6th Paragraph

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35 U.S.C 112, 6th ParagraphExamination Process

• Where the phrase means for or step for is
  present but the claim limitation does not satisfy
  the second or third prong of the 3-prong test,
  the examiner will likewise treat the claim as NOT
  invoking 35 U.S.C 112, 6th Paragraph
• If the applicant responds by questioning whether
  the examiner has properly treated the claim, the
  examiner then provide an explanation

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35 U.S.C. 112, 6th Paragraph

• Factors to be considered in deciding equivalence
• The element must perform the identical function
• Secondary indicia of equivalence

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35 U.S.C. 112, 6th Paragraph

• Indicia of Equivalence
• Function Way Result
• Same function in substantially same way and
  produces substantially same result
• Interchangeability
• Structural Equivalent
• Insubstantial Differences

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35 U.S.C. 112, 6th Paragraph

• If the examiner determines that the prior art
  element is equivalent to the structure, material,
  or acts described in the applicants
  specification, examiner can conclude that the
  prior art anticipates the means-(or step)
  plus-function limitation
• Examiner should also make 35 U.S.C. 103 rejection
  where appropriate
• Burden of going forward shifts to applicant

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INTENDED USE

• In apparatus, article, and composition claims
• Intended use must result in a structural
  difference between the claimed invention and the
  prior art
• If the prior art structure is capable of
  performing the intended use, then it meets the
  claim.

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INTENDED USE

• In a process of making
• The intended use must result in a manipulative
  difference as compared to the prior art